Copyright Infringement Claim Fails for Useful Articles
Copyright and trademark law are often ineffective tools in attempts to protect the intellectual property in our most utilitarian products. The copyright and trademark statutes are poorly suited for anything that has a practical use, whether it be clothing, appliances or, as in this case, eccentric desinger furniture.
The way copyright law, in particular, works when applied to anything with a practical use is counter-intuitive. Even though the threshold for creativity is extremely low, proving that something is creative and not functional is an exceptionally difficult task. The crudest expressions may be copyrightable, but even the most ingenious ideas are difficult to protect when applied to anything with a practical use.
Furniture Design Claims Fail
A recent case from the Southern District of New York demonstrates how difficult it can be to protect creative works that have a useful function, in which the court held that the plaintiff had failed to plead the threshold facts from which it might be found that its design was either physically or conceptually separable from the useful aspects of the products.
In Heptagon Creations Ltd. v. Core Group Marketing, Civ. Action No. 11-cv-1794 (S.D.N.Y. Dec. 22, 2001), the plaintiff sued after its furniture designs were used without permission on an the HGTV show Selling New York, which follows the fortunes of New York City real estate brokers trying to sell multi-million properties.
HGTV Series: Selling New York
The obstacle in this particular espisode, The Big Buy In, was that the $5.9 million condominium that the real estate broker, Core Group, was struggling to sell was vacant. Because apartments sell better furnished, Core Grroup came up with the idea to borrow Andre Joyau furniture from Heptagon.
Heptagon agreed, but wanted the furniture insured. Core Group then decided that rather than borrow the physical furniture, it would copy photos of nine pieces and include them in a virtual presentation that would be used to market the property. The strategy worked, Core Group sold the property for nearly its asking price and netted a $350,000 commission in the process.
Heptagon sued alleging both copyright infringement as trade dress infringement. It named the real estate broker, an architect, and one of the principals of the real estate brokerage firm. The defendants moved to dismiss, alleging that the furniture was not subject to copyright protection.
Functional and Conceptual Separability
Courts in the Second Second Circuit apply two tests to if there is a protectable copyright in the design of a useful item, functional and conceptual separability. The presence of either which will afford copyright protection to the creative aspects of an otherwise useful item, but the standards are very difficult to meet.
Physical separability exists when a component of a useful design can be physically removed from the original and sold separately without adversely impacting the functionality of the item. An example used by the court is ornament applied to an otherwise functional item. It can be removed without affecting the function. Heptagon’s copyright claims failed because the aspects of the design that the plaintiff tried to protect (thee tree-trunk base in the photo above, for example) was part of the functionality of the furniture. A chair without support ingenious or otherwise, simply is no longer a chair.
In a similar manner, the plaintiff’s case failed to demonstrate a conceptual separability, which the court described as occurring when “design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences.” The difficulty in meeting the second test is that functional elements, no matter how “aesthetically pleasing” were nonetheless functions of the furniture. ”The furniture line was obviously designed with an eye to utilitarian concerns,” the court reasoned. “The aesthetic and functional aspects of the nine pieces of furniture are inextricably linked.”
In reaching its decision, the court relied heavily on a recent decision, also from the Southern District, Aqua Creations v. Hilton Hotels, 2011 US Dist Lexis 31982 (SDNY Mar. 28, 2011). In that case, the plaintiff had sought to pursue a copyright infringement claim for the copying of its designs for light shades. There, too, the court found that it was not possible to separate the design of a light shade from its function.
No Trade Dress Protection
Heptagon’s claim for trade dress infringement under section 43(a) of the Lanham Act also failed. First, the court held that the complaint failed to property allege that the trade dress was not functional. Similarly, the court held that the plaintiff had not pleaded a valid claim that the trade dress – separate and apart from the design itself – had acquired secondary meaning in the marketplace.
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